In its first precedential decisions since the Supreme Court’s landmark KSR opinion, the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (the Board) considered the issue of obviousness and affirmed final rejections of claims relating to three different inventions on obviousness grounds, heralding a higher standard for overcoming obviousness rejection in the future. In re Smith, Appeal No. 2007-1925 (B.P.A.I., June 25, 2007) (per curiam); In re Catan, Appeal No. 2007-0820 (B.P.A.I., July 3, 2007) (per curiam); In re Kubin, Appeal No. 2007-0819 (B.P.A.I., May 31, 2007) (Linck, APJ).
Obvious to Try—Kubin
The rejected claims in Kubin concern an isolated nucleic acid molecule that binds CD48, a glycoprotein that is a counter-structure to NAIL, a surface marker on natural killer cells that play a key role in the human immune system. The examiner rejected the claims as obvious in light of three prior art references: Valiente, a treatise on molecular cloning by Sambrook and a journal article by Mathews. Valiente disclosed protein p38, which is identical to NAIL, but did not disclose the sequence or coding of p38. Valiente also taught isolation of p38 using conventional techniques, such as those taught in Sambrook. The relevant teachings of Mathews were cumulative to those found in Valiente and Sambrook and demonstrated how routine skill in the art could have been used to clone and sequence the cDNA of a polypeptide similar to p38.
The Board affirmed the examiner’s rejection, finding that at least one of the appellants’ claimed polynucleotides would have been obvious to one of ordinary skill in the art at the time the invention was made. The Board rejected the appellants’ argument that In re Deuel made it improper for the USPTO "use the p38 protein identified in [Valiente] together with the methods such as those [taught in Sambrook] to reject claims drawn to specific sequences," stating that Deuel was factually distinguishable and not controlling in light of the increased level of skill in the art. Moreover, the Board noted that "the Supreme Court recently cast doubt on the viability of Deuel to the extent the Federal Circuit rejected an ‘obvious to try’ test [in KSR]. Under KSR, it’s now apparent that ‘obvious to try’ may be an appropriate test in more situations than we previously contemplated." Therefore, the appellants’ isolation of NAIL cDNA would have been obvious to one of ordinary skill in the art because a "skilled artisan would have had reason to try [the isolation methods taught by Sambrook] with the reasonable expectation that at least one would be successful."
Combination of Old Elements—Smith
The rejected claims in the Smith application were directed to a pocket insert for a book comprised of two sheets of material adhered together in three edges such that the pocket opening faces the book’s binding. A two-part pocket could be formed by adhering an additional strip perpendicular to the book’s binding. The Board affirmed the examiner’s rejection of these claims as obvious in light of three prior art references. The first reference taught forming a pocket for a three-ring binder by folding a sheet of material and using an adhesive to join the edges adjacent to the fold, thereby creating a pocket opening that faces the binder rings. The second reference taught creating a pocket on a flyleaf by adhering a sheet to the flyleaf along three edges, leaving a pocket opening facing the book’s binding. The third reference taught creating a two-part pocket for a photo album by attaching a transparent cover to a display page with three lines of attachment: one along the page’s upper edge, one along its lower edge and one parallel to the upper and lower edges. The Board determined that the Smith claims "were combinations which only unite old elements with no change in their respective functions and which yield predictable results." Moreover, there was no evidence that "the modifications necessary to effect the combination[s] are uniquely challenging or difficult for one of ordinary skill in the art."
Substitution of Elements—Catan
The claims at issue in Catan concerned a consumer electronics device using bio-authentication data, such as a fingerprint, to authorize credit transactions over a network. The Board affirmed the examiner’s rejection of these claims as obvious in light of three prior art references. The first prior art reference initially disclosed a consumer electronic device using a PIN or passcode to authorize credit transactions over a network; the only difference between this reference and the Catan invention was that the latter uses bio-authentication data instead of a PIN to authorize transactions. The second prior art reference explicitly taught substituting a voiceprint in place of a PIN to increase authentication security, and the third prior art reference demonstrates that use of bio-authentication data was well known in the art to be more secure than use of a PIN. The Board, quoting KSR, stated, "Where, as here, ‘[an application] claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.’ In that regard, Appellant has provided no evidence that replacing … manual authentication means with … known bio-authentication means yields an unexpected result or was beyond the skill of one having ordinary skill in the art."
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